How does an examiner handle allowable claims in an interference?
When an examiner encounters allowable claims in an interference, they follow a specific procedure. According to MPEP 2303: “If the claims in an application are otherwise in condition for allowance, but for the interference, the examiner should draft an Office action indicating all the reasons why the claims are allowable and stating that interference is…
Read MoreHow does an examiner list prior art during reexamination proceedings?
During reexamination proceedings, the examiner must list all relevant prior art on specific forms. According to MPEP 2657: “The examiner must list on a form PTO-892, if not already listed on a form PTO/SB/08A or 08B, or PTO/SB/42 (or on a form having a format equivalent to one of these forms), all prior art patents…
Read MoreWhat is the time frame for an examiner to request rehearing of a PTAB decision?
The Manual of Patent Examining Procedure (MPEP) provides a specific timeframe for examiners to request rehearing of a Patent Trial and Appeal Board (PTAB) decision. According to MPEP 1214.04: “Such a request should normally be made within 2 months of the return of the application to the TC or the reexamination proceeding or reissue application…
Read MoreWhat should an examiner do if they become aware of litigation during the examination of a reissue application?
If an examiner becomes aware of litigation involving the patent sought to be reissued during the examination process, and the applicant has not provided details about this litigation, the examiner should take the following steps: In the next Office action, inquire about the litigation details. Use Form paragraph 14.06 for this inquiry. If the litigation…
Read MoreCan an examiner request rehearing of a PTAB decision?
Yes, an examiner can request rehearing of a Patent Trial and Appeal Board (PTAB) decision. However, this process is subject to specific guidelines and approvals. The MPEP states: “The examiner may request rehearing of the Board decision. Such a request should normally be made within 2 months of the return of the application to the…
Read MoreWhat should be included in an examiner’s request for rehearing of a PTAB decision?
When an examiner requests rehearing of a Patent Trial and Appeal Board (PTAB) decision, the request must meet specific content requirements. The MPEP 1214.04 outlines these requirements: “The request for rehearing must state with particularity the points believed to have been misapprehended or overlooked by the Board.” This means the examiner must clearly identify and…
Read MoreWhat should an examiner do when reviewing a reissue application related to litigation or PTAB trials?
When reviewing a reissue application, an examiner should: Determine if the patent for which reissue is filed is involved in litigation or a pending PTAB trial Check the status of any litigation or PTAB trial Consult MPEP § 1442.02 to determine if prosecution should be suspended Inquire about specific litigation details if not already provided…
Read MoreWhat should an examiner do if they know of references that could lead to rejection after a PTAB reversal?
If an examiner has specific knowledge of references that could lead to rejection of claims after a Patent Trial and Appeal Board (PTAB) reversal, they should not immediately reject the claims. Instead, the MPEP outlines a specific procedure: “If the examiner has specific knowledge of the existence of a particular reference or references which indicate…
Read MoreHow does an examiner handle species that are not patentably distinct?
When an examiner encounters species that are not patentably distinct, they should group these species together. The MPEP 809.02(a) provides guidance: “In making a requirement for restriction in an application claiming plural species, the examiner should group together species considered clearly unpatentable over each other.” The examiner’s approach includes: Identifying species that are obvious variants…
Read MoreHow does the examiner determine if a reference qualifies for the prior art exception under AIA 35 U.S.C. 102(b)(2)(C)?
How does the examiner determine if a reference qualifies for the prior art exception under AIA 35 U.S.C. 102(b)(2)(C)? The examiner follows a specific procedure to determine if a reference qualifies for the prior art exception under AIA 35 U.S.C. 102(b)(2)(C). According to MPEP 717.02(c): “If the applicant provides a proper statement asserting common ownership…
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